Marks of bad faith;
beware of the imposters
and impersonators
Southcorp Brands Pty Ltd (Southcorp), the producer of
the famous PENFOLDS wine, is winning the war against
a group of Chinese companies trying to register trade marks
for wine and other alcoholic beverages in Australia.

6 In the opposition to the RICH BOSS
application, Southcorp relied on
the grounds of opposition available
under s.59 and s.62A of the Trade
Marks Act 1995 (Cth) (the Act),
whilst in the opposition to the
R & R ESTATE application it relied
on s.42(b), s.44, s.60 and 62A.

In both cases the Hearing Officer
considered only the successful
s.62A ground of opposition.

Section 62A provides that an
application for registration of a mark
may be opposed on the ground that
it was made in bad faith. A number
of cases have now considered what
constitutes ‘bad faith’ including
Fry Consulting Pty Ltd v Sports
Warehouse Inc 2 , where Dodds-
Streeton J stated the test for bad
faith as whether “persons adopting
proper standards would regard the
decision to register as in bad faith,
or that reasonable and experienced
persons in the field would view
such conduct as falling short of
acceptable commercial behaviour.”
Bad faith has been found in previous
cases where an applicant is shown
to have prior dealings with, or
has acknowledged the rights of
the trade mark owner, and has
engaged in a pattern of behaviour
of misappropriating foreign trade
marks or has sought to register a
deliberate misspelling of the mark.

In the case of the RICH BOSS mark,
Southcorp’s evidence demonstrated
that the Applicant was connected
to a group of interrelated entities
who had collectively been involved
in numerous proceedings both
in China and Australia related
to attempts to use and register
trade marks which were similar
to Penfolds marks, including marks
such as RUSH RICH and marks
featuring the Chinese character
version of the Penfolds mark.

In making the finding of bad faith,
the Hearing Officer stated:
The Applicant seeks to register
a mark for wine that takes
elements to the Opponent’s
well-known Penfolds brand
which is a renowned and highly
regarded wine brand in Australia.

The Applicant has done so clearly
aware of the Opponent and its
Penfolds brand, since the Applicant
Group has made frequent and
repeated attempts
to register marks that are similar
to the Opponent’s Marks for wine.

In the absence of any alternative
explanation of the Applicant’s
conduct I consider that the
application to register the Trade
Mark was part of a pattern of
conduct by the Applicant Group
in both seeking to register trade
marks and engaging in broader
conduct with the aim of passing
itself off and to misappropriate
the goodwill of the Opponent
(and in particular the goodwill
the Opponent has in its Penfolds
brand and related products).

In the case of the R&R Estate mark,
the evidence was that the Applicant,
Eastern Tomorrow (Jinjiang) Import
& Export Co Ltd, had previously
applied for registration of a mark
incorporating the words RUSH RICH.

Southcorp had successfully
opposed this registration on bad
faith grounds. In that case, the
Hearing Officer had found that
the words “RUSH RICH” were
an approximate translation of
Southcorp’s mark when represented
in Mandarin characters.

Southcorp Brands Pty Limited v EASTERN TOMORROW (JINJIANG) IMPORT & EXPORT CO LTD [2020] ATMO 59 (21 April 2020) and Southcorp
Brands Pty Ltd v BIN-VIN (Shanghai) Trading Co Ltd [2020] ATMO 51 (1 April 2020)
2 Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81
1
Inspire July 2020
In the most recent cases 1 before
the Australian Trade Marks Office,
Southcorp has successfully
opposed the registration of
the following marks in class 33
covering wine and other alcoholic
beverages on the basis of the
‘bad faith’ ground of opposition:



The Hearing Officer
found that the
Applicant’s conduct fell
short of the standards of
acceptable commercial
behaviour observed
by reasonable and
experienced persons.

In finding that s.62A was made out
in the present case, the Hearing
Officer – whilst noting that a finding
of similarity was not necessary
under that ground – found it was
relevant that the R&R Estate mark
was ‘substantially identical’ to
the Applicant’s earlier filed RUSH
RICH mark. This RUSH RICH
mark had been in widespread use
and as such, the Hearing Officer
found that there was a risk that
the Applicant’s reputation in the
Rush Rich mark would survive and
lead to confusion with the R&R
Estate mark. The Applicant filed no
evidence in support of its case and
the Hearing Officer, whilst noting
that no adverse implication flowed
from this, stated ‘it can be assumed
that any information would not have
assisted the Applicant’s case’. Thus,
the Hearing Officer found that the
Applicant’s conduct fell short of the
standards of acceptable commercial
behaviour observed by reasonable
and experienced persons.

The bad faith ground may
provide opponents with a
vehicle to successfully challenge
the registration of marks that
might otherwise proceed to
registration where for example,
the marks are not similar enough
to establish a s.44 ground or a
reputation is not sufficient for
a s.60 ground of opposition.

Trade mark watches, particularly
for well-known and emerging
consumer brands, are an important
means to keep an eye on traders
who may be making applications
in bad faith. Stopping such conduct
is vital for trade mark owners
wanting to maintain and protect
brand value and avoid trade mark
dilution and consumer confusion.

Inspire July 2020
7 Anita Brown | Partner
BA LLB MIPLaw GAICD
anita.brown@pof.com.au